Deskan S/A of Nassau, the Bahamas, which owns a trademark to the term Bon Grille In Brazil lost a UDRP seeking 3 domain names including the direct match domain bongrille.com.

The other 2 domains sort in the UDRP were franquiabongrille.com and franquiabg.com

The domain bongrille.com is basically a ‘sucks” type of site and the panel engaged in a very interesting discussion of free speech and the use of a domain containing a trademark and is worth a read.

Here are the relevant findings and discussion by the one member WIPO panel:

“Although the Complaint alleges that all three disputed domain names are confusingly similar to Complainant’s BON GRILLE “well-known” marks, as explained below, the Panel finds that: (1) the disputed domain name is identical to Complainant’s marks; (2) the disputed domain name is confusingly similar to Complainant’s marks; and (3) the disputed domain name is neither identical nor confusingly similar to Complainant’s marks.

The Panel rules that the Complaint fails to fulfil the second element of paragraph 4(a) of the Policy with respect to the disputed domain name, as elaborated below. As further explained below, the Panel refrains from ruling on whether paragraph 4(a)(ii) of the Policy is fulfilled with respect to the disputed domain name.

Under the facts presented, the Panel is of the view that the legal question of fair use under Policy paragraph 4(c)(iii) is a significant issue in this proceeding, at least in respect of the disputed domain name .

The Complaint makes no substantial allegations relevant to the concept of legitimate noncommercial or fair use; it contends only that Respondent uses the disputed domain names to “disrupt,” “tarnish” or to foment mistruths and to make illegal material false statements – potentially to defame Complainant and its founders/managers.

In the discussion that immediately follows, the Panel considers the allegations of tarnishment and the alleged mistruths, material false and potentially defamatory statements.

The concept of disruption is considered under the Panel’s discussion of Bad Faith under Policy paragraph 4(a)(iii), in the section following this section on rights and legitimate interests.

Does Respondent’s use of the disputed domain name represent protected free speech? Does it therefore constitute fair use, to underpin the existence of rights and legitimate interests on the part of Respondent?

The Complaint does not allege, nor does the record reflect, that Respondent uses the disputed domain names for any commercial purpose. Instead, the record reflects use of in connection with a “gripe” site, or forum for criticism and sharing of negative information respecting the business conducted by Complainant under the BON GRILLE marks.

Some UDRP panels recognize a noncommercial free speech right in the use of a website employing a disputed domain name that is identical or confusingly similar to the complainant’s trademark, while others, although acknowledging the existence of the noncommercial free speech fair use defense, have declined to grant the defense in certain cases.

Several UDRP criticism site cases turn on whether the disputed domain name is on the one hand identical or, on the other hand, merely confusingly similar to the complainant’s trademark.

Some panels in the former cases (e.g., “”) have found that the principle of free speech on the Internet does not go so far under the Policy as to permit the initial confusion experienced by Internet users to be dispelled only upon viewing content of a respondent’s webpage containing criticism, protest or parody.

In some of the latter cases (e.g., “”), fair use is found because the panel concludes that a respondent’s choice to add words to the trademark itself alerts Internet users that the respondent’s webpage is not that of the complainant (such as in the so-called cases).

Thus in the latter cases, it is sometimes considered that a respondent’s use of the disputed domain name does not obstruct access or confuse the public about the website of the trademark holder.

The Panel has considered these issues in previous proceedings. The Panel is generally of the view that use of a domain name for a noncommercial purpose is legitimate even if it is identical or confusingly similar to a complainant’s mark, if a respondent’s use does not materially obstruct access by Internet users to the complainant.

Before considering whether Respondent’s use of the disputed domain name cannot qualify for fair use because it materially obstructs access to Complainant, however, the Panel must make a threshold finding that protected speech is involved.

It is difficult to evaluate the extent of legal free-speech protection for the content of Respondent’s website, particularly without guidance from either Complainant or Respondent.

The Panel believes that the national right to free speech vying for application here is enshrined in Article IV of the Brazilian Constitution of 1988, and possibly other sources of national law. Article IV reads “é livre a manifestação do pensamento, sendo vedado o anonimato,” translated to English as “the expression of thought is free, anonymity being forbidden”.

Potential sources of international law supporting freedom of expression that vie for potential application in this proceeding include the Universal Declaration of Human Rights, the European Convention on Human Rights, and the Charter of Fundamental Rights of the European Union (Article 11). Article 19 of the Universal Declaration of Human Rights reads: “Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.”

The Panel views the right to free speech under the above-mentioned national and international standards guaranteeing freedom of expression to be sufficiently broad to cover the present situation.

Respondent’s website comments on Complainant’s business practices, in particular, those affecting other important individual rights, such as the right of individual franchisees to make a living and to avoid allegedly corrupt practices.

The website also appears to be inviting the participation of others in organizing or pursuing legal redress for the alleged injuries to franchisees.

For its part, Complainant understandably finds the material appearing on Respondent’s website to be stinging and harsh.

The Panel recognizes that Complainant has alleged that the website contains false information.

However, in this summary UDRP proceeding, the Panel cannot undertake an evaluation of the veracity of content and whether it is potentially defamatory (and therefore presumably not protected) under Brazilian law.

For purposes of the present analysis only, the Panel will assume that Respondent’s expression is protected speech under applicable law.

Even accepting this assumption, the Panel must then proceed to weigh the question of whether the context here supports fair use.

Put otherwise, under the authorities previously discussed, the Panel must examine whether Respondent’s exercise of its right to make comment does not unduly confuse users or obstruct access to complainant’s website, despite the initial confusion that might occur when users directly type into their browser address bar or otherwise access Respondent’s website.

The Panel concludes that Respondent’s use of the disputed domain name does not materially obstruct access to Complainant.

It is true that at least in the case of Respondent adopted the words of Complainant’s mixed mark itself as a domain name (a case), and thus does cause initial confusion among Internet users. Users for the most part would only become aware that they are not visiting Complainant’s website once they arrive to view Respondent’s home page.

Many, if not most, Internet users would employ a search engine to find a website corresponding to a trademark in today’s search-engine based online culture. The Panel has conducted such searches.

Searching for “Bon Grille” in the popular search engines at “www.yahoo.com” and “www.google.com”, Respondent’s website did not appear in the first five pages of listings; however, the listing of Complainant’s “www.bongrille.com.br” website appeared first in both searches along with several later listings pointing to Complainant’s website.

On the www.bing.com search, again, Complainant’s site appeared first; Respondent’s site at “www.bongrille.com” appeared only on the fourth page of listings, following further references to Complainant’s site. The visible material on the Bing browser summary listing also would, in the Panel’s view, alert users to the critical nature of the site’s content and the fact that the listed site was not Complainant’s.7

This Panel believes that a formalistic disclaimer is not indispensible to alerting users that they have reached a website that is not Complainant’s, employing a context-based approach.

The Panel finds that the information and tone of the site would alert any reader upon first viewing that the website is not sponsored by Complainant, but is instead boldly critical of Complainant’s business, championing individual franchisees who have allegedly been run out of business by the management of the restaurant franchise.

The Panel believes that although the domain name does not add terms to the words of Complainant’s mixed mark, no one viewing the website could reasonably think that the website to which it routes is Complainant’s website. Complainant also owns the registration to a domain name identical to its mark, with the suffix “.com.br”. Thus, the Panel believes under the authorities referenced above that Respondent’s use of the disputed domain name for critical commentary and news does not unfairly mislead users seeking to find Complainant’s website or unreasonably obstruct users from reaching Complainant’s website.

ii. Tarnishment

The Panel must also address the Complaint’s allegations that Respondent’s use of the disputed domain names tarnishes Complainant’s mark. If found, tarnishment would also preclude a finding of fair use under Policy paragraph 4(c)(iii).

The Panel notes that it is often the nature of critical commentary to make negative associations with a trademark or trademark holder; nonetheless, critical content on a website using a confusingly similar or identical domain name has been held by panels and courts to be fair use and permissible.

As noted by others, it has long been established that tarnishment in the context of the Policy “refers to unseemly conduct such as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark.

Fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy; rather, claims sounding in … libel must be brought in other legal venues. Id.” Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.

The Panel has reviewed the record in detail, and finds that “unseemly” conduct such as that classically constituting tarnishment under the Policy, as described above, is absent from this case.

In summary, the Panel finds that the Complaint fails carry the burden to establish a prima facie case, for failure to prove the absence of a fair use right by Respondent to launch critical commentary using the domain name.

iii. The Disputed Domain Name

The Panel must separately examine the application of Policy paragraph 4(a)(ii) to the disputed domain name , because it routes to no publicly visible content and therefore is not associated with critical commentary.

There are no meaningful allegations before the Panel bearing upon whether Respondent has rights or legitimate interests in the disputed domain name.

There is no record of use of the website since its registration.

In the absence of specific allegations or evidence, therefore, it is also difficult to establish whether the Complaint fulfills Policy paragraph 4(a)(ii) as to .

However, because the Panel concludes below that the Complaint fails to establish bad faith registration and use, the Panel refrains from ruling on the application of Policy paragraph 4(a)(ii) in relation to the disputed domain name.

E. Registered and Used in Bad Faith

The Complaint makes several allegations respecting bad faith. For the sake of analysis, the Panel divides and enumerates these bad-faith allegations in summary as: (1) Respondent is tarnishing Complainant’s marks; (2) Respondent seeks to draw Internet users to Respondent’s website through confusion with Complainant’s marks; (3) Respondent makes negative statements and criticisms about Complainant; and (4) Respondent is disrupting Complainant’s business.

The Panel analyzes in turn each of these alleged grounds for finding bad faith, although the fourth allegation seems most significant.

Paragraph 4(b) of the Policy describes circumstances that may be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the respondent] ha[s] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name”;

“(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct;

“(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor”; and

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on your website or location.”

The circumstances listed under paragraphs (iii) and (iv) of Policy paragraph 4(b) seem most germane to this proceeding.8

As for the Complaint’s bad-faith allegation number (1), the Panel reiterates that the record contains no indication of tarnishment in the sense of the Policy.

Bad-faith allegation number (2), confusion, appears to relate to Policy paragraph 4(b)(iv). The Panel rules that this ground for finding bad faith fails because mere confusion is insufficient: the language of the UDRP requires a motivation of commercial gain, which is not alleged, and in any case, absent on the record of this proceeding in connection with both the and disputed domain names.9

In relation to bad-faith allegation number (3), the Complaint alleges that “Person[s] seeking information on Complainant’s activities might be drawn into the Respondent website and be exposed to contrary and critical views.” Negative commentary is often inherent in the nature of free expression. Again, however, it is well established that free speech may underpin a respondent’s permissible use of domain names incorporating or based on a complainant’s marks, and the encouragement of robust debate and divergent viewpoints often underlies national legal guarantees of freedom of expression.

Bad-faith allegation number (4), disruption of Complainant’s business, appears to be made in reference to Policy paragraph 4(b)(iii). This ground for finding bad faith under the UDRP, by its express terms, requires registration of a disputed domain name “primarily for the purpose of disrupting the business of a competitor.”

Is Respondent a “competitor” for purposes of finding bad faith under the UDRP?

The majority of UDRP decisions that this Panel has found examining the application of Policy paragraph 4(b)(iii), unlike the present proceeding, involve commercial competitors in the ordinary sense.

In support of its allegations of bad faith, Complainant here cites the panel decision in Mission KwaSizabantu v. Rost, WIPO Case No. D2000-0279.10 In that decision the panel ruled, among other things, that a respondent who did not compete with the complainant in respect of goods or services nonetheless acted as “competitor” when he published a criticism web site because “[t]he natural meaning of the word ‘competitor’ is one who acts in opposition to another”.

Although this interpretation of “competitor” from the Mission Kwasizabantu decision has been followed by some, see The Toronto-Dominion Bank v. Boris Karpachev WIPO Case No. D2000-1571, this Panel believes that the view expressed in several other UDRP decisions more consistently supports the UDRP’s plain meaning and the theory behind it. For example, the panel in Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 wrote:

“The Panel respectfully disagrees with the theory of Mission KwaSizabantu and similar cases that any form of oppositional interest (such as that between a trademark owner and the publisher of a criticism site) may transform the complainant and respondent into ‘competitors’ as that term is used in Paragraph 4(b)(iii) of the Policy. . . . . Rather, a respondent can ‘disrupt[] the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner. If Paragraph 4(b)(iii) were given the meaning advanced by Complainant, respondents would be found to have disrupted the business of competitors in far too many cases, and the Policy’s bad faith requirement would be diluted . . . .”

Embracing Tribeca Film Center’s interpretation of “competitors”, the Panel finds that there is no indication that Respondent uses or intends to use the disputed domain names in connection with goods or services in the field of the marks.

The present content on the website clearly supports this finding.

The Panel infers from the fact that both the and disputed domain names were registered the same day on Respondent’s behalf that Respondent’s intentions respecting both disputed domain names was similar.

In any case, there is no allegation or indication on the record that could support an inference that Respondent intends by using the disputed domain name to “offer goods or services that can compete with or rival the goods or services offered by the trademark owner.”

The Panel therefore concludes that the Complaint also fails to establish bad faith under Policy paragraph 4(b)(iii).

Examining both the enumerated factors and the overall circumstances which reflect no commercial motivation in the use of the disputed domain names, the Panel concludes that the Complaint fails to establish bad faith registration and use as required under the Policy.

It is out of bounds in this summary UDRP proceeding for the Panel to be expected to rule on the Complaint’s allegations that Respondent’s registrations were made in violation of the Brazilian Trademark and Unfair Competition law and other potentially applicable laws. With the exception of making rulings under the UDRP, the Panel respectfully declines counsel’s invitation to do so. Nothing in this decision, however, is intended to affect the ability of the parties to seek recourse under other applicable laws.11
7. Decision

In summary, the Panel concludes that the Complaint fails to fulfill the requirements of Policy paragraph 4(a)(i) with respect to the disputed domain name because the Panel finds that is not confusingly similar to Complainant’s marks.

While the Panel finds that the remaining disputed domain names and are confusingly similar to Complainant’s marks under paragraph 4(a)(i), as also explained above, the Complaint fails to fulfill the further requirements of Policy paragraph 4(a)(ii) with respect to .

Finally, the Panel finds that the Complaint fails to fulfill the requirements of Policy paragraph 4(a)(iii) with respect to both and .

For the foregoing reasons, the Complaint is denied.”